When starting your own business, trademarking is just one of the steps to take to ensure that everything runs smoothly. The thought of handling any legal matters on your own might seem intimidating, but trademarking isn’t so scary when you break it down.
Here are the basics.
What is a trademark?
A trademark can be a symbol, logo, word, slogan, or a name registered to your company. It protects your image and ensures that other businesses don’t infringe on your intellectual property.
Basically, it’s the best way to distinguish your business from competitors—and if you don’t register a trademark, you could lose the rights to your own idea, artwork, and all of the creative energy you have spent on it.
While trademarks ensure that other businesses don’t infringe on your ideas, their main legal purpose is different than other kinds of intellectual property. With patents or copyrights, the main purpose is to lay claim to a product; the main purpose of a trademark, however, is to offer customer protection, in eliminating the chance of consumers confusing one company or service with another.
Why run a trademark search?
A trademark search is incredibly important, because if you’re looking to trademark a slogan, word, or logo that’s already in use by someone else, you could be sued for trademark infringement. This could lead to a big financial setback for your company, and you’d also have to restart your branding from scratch.
According to the U.S. Patent and Trademark Office, if someone is able to prove that you are guilty of trademark infringement, outcomes may include:
- A court order that you stop using the trademark
- An order requiring the destruction or forfeiture of anything with the accused mark
- Monetary relief, including your profits, any damages sustained by the plaintiff, and the costs of the action
- An order that you, in certain cases, pay the plaintiff’s attorney fees
None of these are things you want to be dealing with when trying to start your own business (or ever, really), so it is imperative to clear the availability of your name, logo, or slogan before it’s too late. You can conduct a registered trademark search here.
An important thing to note is that the more distinguishable two companies are, the less it matters how similar trademarks are. For instance, if a taco restaurant and a tire shop were to have similar (or even the same) trademark, this wouldn’t create confusion for consumers. However, if there were two boutique shops with the same trademark, this creates a much bigger conflict.
RegisteredⓇ versus unregistered™ trademarks
A federally registered trademark is recognized everywhere in the country—examples include Nike and Coca-Cola—and has been registered through the U.S. Patent and Trademark Office. An unregistered or common law trademark is usually enforceable only within the geographic region or locale where the trademark owner is using it in business.
In order to establish a common law trademark, all you need to do is simply begin using your trademarked logo or slogan (after ensuring it’s not already in use), and wherever you conduct business—be it a city, state, or all around the country—your trademark is subject to the “common law” respecting the use of that trademark. There is no paperwork, and there are no fees involved.
If you would like the trademark to be federally recognized, however, there is a somewhat lengthy process (about six to 12 months) for accomplishing that. You must file a trademark application, which can be done via a “Use in Commerce” application (you are already using the trademark), or an “Intent to Use” application (you haven’t sold any products yet but plan to). There is about a three month waiting period for a trademark examiner to be assigned to your case.
If the examining attorney finds that there is a potential conflict with your trademark, you will have to respond to what is called an Office Action, which will entail either a change in your trademark or an appeal to the Trademark Trial and Appeal Board. You have six months to respond to the Office Action, or if there are no conflicts, the trademark is posted on the Trademark Official Gazette. Here, anyone can see your trademark and potentially file an opposition to it. If this occurs, there is an opposition hearing where the validity of the trademark will be debated.
Once you’ve cleared any of these hurdles, your trademark will be registered, and if you filed an Intent to Use application, you must prove that you are now using it. If anyone files their initial application for a trademark after your initial application, you will be the one to receive priority for the trademark.
Reasons for refusal of trademark registration
While consumer confusion is the biggest concern for trademark conflict, there are a few other reasons found on the USPTO website for not granting a trademark:
Merely descriptive or deceptively misdescriptive:
A merely descriptive trademark solely describes an ingredient, quality, characteristic, function, feature, or use of the specified goods or services. An example of this would be “denim” for selling jeans, or “spicy sauce” for salsa.
A deceptively misdescriptive mark misdescribes an ingredient, quality, characteristic, function, feature, or use of the specified goods or services, such as using the word “cafeteria” for a sit-down restaurant that is not cafeteria-style.
Primarily geographically descriptive or primarily geographically deceptively misdescriptive:
A primarily geographically descriptive mark simply identifies the geographic origin of the goods or services.
A primarily geographically deceptively misdescriptive mark is one where the goods or services do not originate in the place identified in the mark—for example, a clothing line called “London” that makes clothes in North Carolina.
Primarily merely a surname:
This is pretty self-explanatory: the examining attorney will refuse registration of a mark if the primary significance to the purchasing public is a surname.
An “ornamentation” is something that is a decorative part of a good, that does not actually distinguish the goods from those of others. For example, a slogan or picture that doesn’t actually identify the source of the goods, such as “my grandma loves me” written on a coffee mug.
Obtaining a federal trademark for your business is not required, especially if you are a small business just looking to establish a name in your own town.
However, obtaining a federal trademark ensures that no one else in the country is able to use your trademark, and will show customers that you are very serious about your business.
The most important thing to consider when thinking about trademarking is confirming that you won’t be infringing on anyone else’s trademark. In the meantime, let your creative juices start flowing, and get ready to brand your business in a way that no one’s ever seen!